Thank you for your interest in retaining this Firm to represent your interests in seeking a patent from the United States Patent and Trademark Office. This page contains additional information which may be helpful to you in evaluating your invention for patentability.
In addition to reviewing the information contained in this page, we encourage our clients to research this topic thoroughly before undertaking the patent process. In addition to the information which your patent attorney will provide you, there are many excellent patent law references available from a wide range of reputable sources. The United States Government Printing Office publishes several useful pamphlets on patent law. Other references may be obtained from the public library, from retail booksellers, and on the Internet. Feel free to ask our opinion as to the value of any such references. We highly recommend that you visit the United States Patent and Trademark Office website.
There are three types of patents available under United States law, each protecting different inventive aspects of an "item of manufacture" or a method. The two types of patent most often sought are the utility patent and the design patent.
A. The Utility Patent
A utility patent is a limited monopoly right protecting the functional aspects of an invention. The general public often believes that a utility patent is the most desirable form of patent, although, from the attorney's prospective, the requirements of each individual case will dictate the accuracy of this conclusion.
A utility patent may be obtained if the invention is new, useful, and not obvious to a person of ordinary skill in the art. Section 101 of the United States Patent Laws states in relevant part:
"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor ...."
35 U.S.C. § 101. Under United States law, only the first inventor of an invention which meets the above criteria may seek and obtain patent protection. 35 U.S.C. § 102.
Additionally, United States patent laws provide that a combination of separate patents can defeat patentability, even though the exact invention is not disclosed in a single issued patent. Section 103 of the United States Patent Laws states in relevant part:
"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
35 U.S.C. § 103. In plain language, Section 103 states that if a person having ordinary skill in the relevant art could look at the individual elements of several patents and be motivated thereby to combine them to form the item for which patent protection is sought, the resulting invention would not be patentable. It is often a combination of inventive aspects of multiple patents upon which the Patent Examiners rely to reject a patent application. In such cases, a patent will not be issued for the invention.
B. The Design Patent
A design patent protects the ornamental characteristics of an item of manufacture. The standards for patentability which were discussed above apply equally to utility and design patents. Generally, an application for a design patent will be subject to the same standards, scrutiny, and rejection criteria as will an application for a utility patent.
United States law protects the owner of a valid U. S. patent against a wide variety of infringing activities. A patent infringer is defined as anyone who, without a valid license, makes, uses, sells, offers for sale, or imports into the United States any device, or its legal equivalent, protected by one or more valid United States patents. Under the relevant United States law protecting the above referenced patents, the term of a utility patent is currently variable: it commences at issuance and continues thereafter for a term of either seventeen years from the date of issuance or twenty years from the date of filing, depending upon the applicable GATT/TRIPS 1 term extension provisions. The term of a design patent commences at issuance and continues for 14 years thereafter. Only after passing of the patent expiration date relevant to a specific invention at issue may a person other than the patent holder properly make, use, sell, offer for sale, or import into the United States the patented invention.
As you may know, the metes and bounds of any patent protection which might be obtained for your invention are defined by the prior art (equivalent or similar devices) developed by others. This, of course, assumes that your invention falls within certain categories of acceptable statutory subject matter.
A patentability search, often called a novelty search, is generally the first step in determining whether your invention may be patentable. This search is conducted either in Washington, D.C. at the U. S. Patent and Trademark Office or in one of its authorized, regional satellite repositories. The results of that search will indicate (although not perfectly) whether your invention might be patentable. The results will also give us certain additional relevant information which is often of interest to us and our client.
For example, a careful comparison of your particular idea with the prior art patents may help point out a feature or aspect of the invention which has not previously been developed or exploited. Additionally, a patent search enables your patent attorney to review, prior to filing your patent application, the prior art patents which will be cited by the U. S. Patent Office Examiner as relevant to the patentablility of your invention. In this way, your attorney can plan the best approach to take during preparation of your application, so that valuable time and resources are not wasted on aspects of the invention which do not have a reasonable likelihood of passing the scrutiny of the Patent Office.
Our fee for each patentability search is based upon the complexity of the invention. Based upon our typical workload, you should expect that it will take approximately 2-3 weeks to obtain the results of any given search.
For those devices passing the patentability search phase, you would have the option to proceed to seek patent protection. The total legal fees you might anticipate in seeking patent protection is highly variable, depending upon the amount of time required to prosecute the matter before the U.S.P.T.O, and further depending upon your strategy, goals, and instructions to us. Additional charges typically will include the various costs and expenses associated with application filing fees, drafting (patent illustration) fees, and issuance fees. Based upon our typical workload, you should expect that it will take 4-6 weeks to prepare for filing the average application, including drawings. Recent Patent Office statistics indicate that the U.S.P.T.O. has average prosecution times of eighteen to twenty-four months per application.
Generally, until a patent application is filed in Washington, you should keep your invention secret. If others must have access to your invention, you should insist upon their signing a non-disclosure agreement before giving them access to the invention. We can, of course, draft any such agreements you may require.
You should also very carefully document each development in your inventive efforts. This documentation should be kept in a bound (non-looseleaf) volume and entries should be made at, or very near, the time of your development. Each entry should be witnessed by one or more neutral witnesses or notary publics, after each has read and understood the relevant entry.
Our Questionnaire covering typical patent documentation considerations, along with certain relevant legal questions, is linked for your consideration and use. Please answer these questions in your invention notebook. For obvious reasons, you should continue documenting changes and improvements in your invention whenever and as frequently as they occur.
You should also document every alternate design which you have considered for your invention, even if such designs are not the most desirable, the best, or the most marketable. The reason for this consideration is a practical one: a competitor will look for alternate designs to "get around" your patent and, thereby, cut into your market share without legal liability to you. If your patent attorney is given the opportunity to review these alternate designs, some of these "design-arounds" can be considered and potentially minimized when the initial patent application is prepared.
You should periodically review your answers to our Questionnaire. Should any of your answers change during your ongoing developmental efforts, be sure to document your new answers in your design notebook.
One final note regarding your documentation: Remember at all times that the patent application process is a legal proceeding, subject to federal law and regulation. Just as you would expect in any other legal proceeding, evidence is of paramount importance. Your evidence for patent prosecution purposes is comprised of any document, invention prototype, drawing, sketch, witness, paper, or record, without limitation, which proves, or tends to prove, your answers to questions similar to those contained in our Questionnaire. Dates and other details are of critical importance. Procedures and means by which each piece of evidence may be validated and authenticated are essential. Be careful to document, record, have witnessed, compile, and preserve each and every piece of evidence bearing upon your answers to our Questionnaire.
Please feel free to consult us if you have any questions regarding the proper method of recording, authenticating, and preserving your documentation. Although the above guidelines are not relevant in every case, you should consult us if you decide to vary at all the procedure outlined above.
Should you wish to schedule an initial consultation to discuss your invention and goals more specifically, please call our appointment secretary at (770) 541-7444. She will schedule an appointment for you. Please note that we do not charge for the first 60 minutes of your initial consultation; however, any additional time which you may require during that session will be charged at our standard hourly rate.
Should you decide to retain us to perform any work on your behalf, our staff will prepare and mail to you our standard engagement letter. Upon our receipt of your signed agreement and initial retainer fees, we will proceed in accordance with your instructions.
This Firm also represents inventors in prosecuting international patents; in conducting secured disclosures to industry; in finding and developing engineering, prototyping, and manufacturing resources; in developing products from concept to market-ready design; in finding and developing marketing partners; in developing business opportunities; in selling or licensing individual patents or portfolios; and, in protecting intellectual property rights in all forms.
In addition to our patent-related services, we represent businesses, artists, designers, architects, software developers, musicians, and, of course, inventors in seeking and enforcing intellectual property rights, especially through state, federal, and international trademark, copyright, and trade secret laws.
Should you have an interest in these types of legal services, please feel free to consult with us regarding how we might be of assistance to you.
Again, thank you for considering this Firm to represent your interests in your very important inventive matter. Should you have any additional questions, we would welcome your personal call.
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1. General Agreement on Tariffs and Trade, Uruguay Round Agreements Act, 103 Pub. L. No. 465, 108 Stat.4809 (1994); Agreement on Trade Related Aspects of Intellectual Property Rights, Including Trade in Counterfeit Goods of the General Agreement on Tariffs and Trade, opened for signature Apr. 15, 1994, 33 I.L.M. 81, 83-111 (1994). The General Agreement on Tarriffs and Trade is an international treaty to which the United States is a signatory. GATT is an international treaty designed to reduce barriers to, and discrimination in, international trade by restricting tariffs, banning certain national quotas, and providing an impartial forum for the resolution of international trade disputes. The intellectual property aspects of GATT are often referred to as GATT/TRIPS.